New Technology - Who Is the Designer?
This case illustrates a commonly blurred area between the right to ownership of one's ideas and the right to exclude others from making, using, or selling an invention.
Edgar Engineer is a licensed civil engineer and principal investigator on a university project researching environmental contamination problems. His work involves the sampling of groundwater and soil to determine the nature and extent of contamination at a local commercial site. As a result of his research at the site, Edgar identified a need for improvements in commercially available sampling technologies; essentially, Edgar wanted to provide more samples for improved analysis without any negative impact to the project in terms of cost or sample integrity. He sketched out a sampling concept that he believed would save significant labor and cost, and shared the idea informally with Doris, the manager of the site, who encouraged Edgar to explore construction strategies.
Edgar contacted Fabio Fabricator, a vendor who supplies sampling equipment, to discuss a sampling system that would do what Edgar wanted. Edgar's concept included general design requirements and performance specifications in the written request for cost proposal. Fabio responded to the request, discussed the sampling idea with Edgar, and agreed to build a prototype that would meet Edgar's sampling performance needs.
Doris agreed to split the initial costs with Edgar, provided that this technology would be proven and ultimately used first on her site, and that her site would benefit directly from eventual cost savings. Over the next few months, Edgar and Fabio met occasionally to review Fabio's drawings and refine the performance specifications. Fabio customized a hand-operated sampling machine (which he had been selling and was currently patenting) to meet Edgar's requirement that it be remotely operated. Fabio built a system that incorporated other existing technologies into the unique design that would meet Edgar's sampling requirements. Some of these technology ideas were suggested by Edgar. Upon completion, the prototype was delivered to Edgar, who began conducting field tests of the design and performing sampling tests to determine its effectiveness.
During this period of testing, Edgar led a research project comparing samples from the new technology with traditional sampling techniques. Edgar assigned the field development and machine testing to Mac, a mechanical engineering post-doc, who made field improvements to some parts of the system and also directed Fabio to redesign certain components to improve reliability. Upon completion of the comparability study, the new technology's sample quality was shown to be as good as the other, more time-consuming sampling protocols.
In her company's annual report and advertising, Doris enthusiastically publicized this successful time- and cost-saving innovation that she had helped support and develop, claiming it was designed by Fabio for Edgar's institution. Edgar's main interest was in the faster, improved protocol that this device enabled, and he published several conference and journal papers discussing the advantages of the innovative sampling approach, the technology's field development, and the research comparing it with older methods. Edgar co-authored these papers with the Mac, and Doris, who were integral to proving the technology in the research project. Meanwhile, Fabio developed improved models of the sampling machine for industry and began marketing the technology. Everyone seemed happy: Edgar's research project (and Doris's site cleanup) progressed more rapidly with renewed funding, and Fabio printed up some new catalogs including the new product.
A year later, Edgar discovered that Fabio had applied for a new patent covering the overall sampling system. Edgar complained to colleague at the university, "I met with Fabio at a conference last week and saw the new sampling machine. Fabio is pursuing a patent on it, and we got into a bit of a discussion. Most of the ideas that went into it were mine, with changes to their existing equipment. I told him that I wanted to be listed on the patent, and he said that he'd 'keep me informed of the status.' I don't think that's good enough, and I would like some advice on how to proceed."
1. Whose idea (intellectual property) is this technology? Who designed the technology? Are these the same questions? Support your position, identifying additional information that, if available, would support your view.
2. Suppose Fabio is not an engineer, but instead has good mechanical skills that make him an experienced fabricator. He asks Edgar to review and comment on the technical drawings and size specifications to ensure the system will have proper capacity when operated. Is Edgar performing technical peer review of a vendor's product, or is he acting as a licensed engineer "in responsible charge" of design approval?
3. Should Fabio have been included as a co-author in Edgar's research papers? Why or why not?
4. Should Fabio have included Edgar in the patent application? Why or why not?
5. What about the roles of Mac and Doris in the prototype design modifications and funding? Should they have been included in the patent application as well? Why or why not?
Fabio sees this situation differently. Edgar approached him with performance requirements, just like any other buyer of his products. Although these performance requirements related to Edgar's good idea, Fabio designed the specific technology that merited the new patent. Fabio believed that Edgar - a civil engineer - did not have the mechanical background to design the machine; he only had the knowledge to define the problem. Modifications to the sampler retrieval unit that Fabio was already selling and patenting were a central part of the sampling machine; these were modifications within the scope of Fabio's original product design.
Moreover, Edgar's performance specifications conformed to Fabio's patent, simply allowing Fabio to apply his design in a new way, coupling it with existing technologies. In fact, Edgar provided no more than rough cartoon sketches and written criteria that the technology had to meet; the cartoon sketch Edgar provided was hardly a design, Fabio believed, but more like an outline of the sampling problem. It was Fabio who independently produced all technical drawings used to construct the technology - the same drawings that were included in his application for the additional patent describing the unique features of the sampling machine. The studies that Edgar's institution published significantly boosted Fabio's status as product vendor, but Fabio did not believe they directly contributed to the design.
Edgar's colleague responded to his complaint with the following advice on the patent: "If you have your ideas documented and signed in your notebook, the university could strongly recommend that your name be on the patent application. If Fabio does not put your name on the application, it would put his whole patent in jeopardy."
Edgar explained, "I have several files on the design of the vehicle, although nothing is really signed or in a notebook. My notes document the study we did with the technology, focusing on the modification of accepted protocols. I was going to draft a letter to Fabio laying out my thoughts. Would you be interested in reviewing it?"
6. Does this additional information alter your judgment about who designed the technology? Why or why not?
7. If you were Edgar's colleague, how would you respond to him?
8. Do the facts that Fabio is not an engineer but an experienced mechanic, while Edgar holds an engineering degree and a professional license, make a difference in your assessment?
9. Suppose that Edgar and Fabio worked for the same firm or research institution, with Edgar as the principal investigator and Fabio as the technician; does your assessment change?
Ultimately, Fabio received patents for the hand-operated sampler and for the automated sampling machine. Edgar was upset that he was not named in the patent, but neither he nor the university pursued the issue with Fabio. The university did recognize Edgar's efforts and publications with a favorable promotion review, and Edgar's work remained highly respected. Fabio remained a vendor of this new sampling machine and other equipment.
10. How many points can you identify in the story where Edgar could have acted to change the outcome? Identify at least two alternative actions Edgar could have taken at each stage of the story that might have provided a more satisfactory outcome.
11. Was the outcome fair? Why or why not?
Brian Schrag, ed., Research Ethics: Cases and Commentaries, Volume 2, Bloomington, Indiana: Association for Practical and Professional Ethics, 1998.
It is difficult to determine precisely what contributions each of the parties made in this scenario. Since everyone seemed quite satisfied until Fabio sought a patent, it seems that they had a satisfactory division of labor. Edgar, Doris and Mac co-authored papers on the advantages of their innovative sampling approach, and Fabio developed improved models of the sampling machine and began marketing the technology.
However, upon learning that Fabio was applying for a patent for the sampling machine, Edgar argued that his contributions warranted his name being included in the patent. He claimed that most of the ideas that went into the sampling machine were his. It is not clear what he could mean by this assertion. Edgar's role seemed to be to let Fabio know what his sampling needs were, review Fabio's drawings, and refine performance specifications. Fabio, in turn, designed and produced the sampling machine. Admittedly, without Edgar's input, Fabio would probably not have come up with the sampling machine he did, since the machine was designed to satisfy Edgar's research needs. But that, in itself, doesn't seem to warrant Edgar being listed in the patent. On the face of it, Edgar seems to be exaggerating the significance of his input. What could he mean by saying that "most of the ideas that went into the sampling machine" were his. Why, then, did he need Fabio? Is he suggesting that Fabio had virtually no creative input, that he was simply carrying out Edgar's design? Still, it is possible that Edgar provided enough input to warrant being included. We simply cannot tell from the scenario described so far.
The first part of Part 2 seems to fall in line with the response outlined in Part 1. The significant addition in this segment is the reference to Edgar's "files." They might provide some support for Edgar's position. Unfortunately, they are neither signed nor kept in a notebook. Whether the contents of the "files" will ethically support Edgar's position depends on what they contain. Whether they provide legal support may depend on their being signed and in notebooks. If that is so, then the colleague may be sympathetic to Edgar's position but feel it is pointless to help him press his case legally. This segment points to the need for careful documentation of one's work.
This is a case in which all parties would have been well advised to have a clear understanding from the outset of directions in which their work might go, how the work would be credited, and so on. It is unrealistic to think that all potential difficulties might have been anticipated. But it is not unrealistic to think that, as time passes, Fabio would want to move ahead without Edgar. If Edgar thinks he might have some stake in how Fabio proceeds, he should discuss this issue at the very beginning; the discussion of possible patents should occur earlier than a year after they have completed their work together.
What about the ethics of the case, as distinct from the legal questions? Here, it seems to me, a candid discussion of mutual expectations, possible future work and the like is important from the outset. Fabio is a vendor; he is in a business. Edgar is a university researcher. He may not have been ready to see himself in a business relationship with Fabio. However, once he tries to enter the world of patents, he is entering into the business realm. He would be well advised to give some attention to these matters earlier rather than later. This approach is fair both to himself and anyone with whom he enters into a business relationship.
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Author: Michael Pritchard, Western Michigan University.
Support for Fabio's Perspective
Support for Edgar's Position
Legal and Ethical Considerations
Ethical Milestones and Judgment
Technology has become more than ever a collaborative product at all levels. With so much emphasis in academic research on the concept of intellectual property, this case illustrates a commonly blurred area between the right to ownership of one's ideas and the "right to exclude others from making, using, or selling" an invention. The primary ethical dilemma concerns the patenting of the sampling device; a secondary issue concerns authorship requirements. People in different positions view patents and authorship differently; that is where much of the conflict originates. From a contemporary academic perspective, Edgar is clearly the person with the good idea that was developed into a new technology, and he may deserve credit. In fact, it may appear difficult to make the case for Fabio's position. However, the concept of intellectual property in the business world often relies on the axiom that "possession is nine-tenths of the law." Furthermore, the patent is more a mechanism to protect initial market position for an invention than a means for providing credit or recognition.
It may be worth noting that technology can be a rather nebulous term, involving an overall approach rather than just an instrument or device. The patent discussed in this case applies to the sampling system built by Fabio (which is only part of Edgar's idea), rather than to the overall sampling approach. In some cases, such as chemical manufacturing, a production process can be patented, but the intent in this case is not to characterize Edgar's concept for sampling as this kind of production process.
Patents require that competitors obtain direct permission from the patent holder if they wish to manufacture or market a product, invention or process covered by the patent. A patent prevents someone from "reverse engineering" Fabio's design with the intention of marketing it independently. According to law, only the inventor may apply for a patent (except in particular situations, such as when the inventor is dead). More than one person can be an inventor, but a person providing financial support to the development is not considered a joint inventor. Application for a patent requires: 1) a written document that comprises a specification and an oath that the inventor believes him/herself to be the original inventor; 2) a drawing (when necessary); and 3) the filing fees. (U. S. Department of Commerce, 1992)
However, the concept of intellectual property introduces some important questions. In science, intellectual property is primarily an issue of credit and recognition rather than the marketing or production issues addressed by a patent. The research community acknowledges the potential conflict between openness and competition for discovery. Research institutions, academic journals and federal funding sources (such as the National Science Foundation) have set standards protecting individuals with good ideas by ensuring that they receive credit for their contributions. (National Academy of Science, National Academy of Engineering, Institutes of Medicine, 1993)
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Support for Fabio's Perspective
We begin by making the case for Fabio to support an extended discussion with those more familiar with the intellectual property arguments. In this case, Fabio prepared all technical drawings and defined explicit specifications for the sampling machine. While these documents were inspired by a rough sketch and statement of needs that Edgar had defined, the initial concept was hardly a design. Analogously, many people had the idea of human flight long before the first successful design. Edgar's concept of an improved sampler may not have contained the detail required for patent until Fabio invented the specific design to solve Edgar's problem. Furthermore, Edgar entered into a financial contract with Fabio that compensated Fabio for his design. While Edgar did review the designs occasionally, there is no evidence in the case (as written) supporting Edgar as a collaborative inventor. To Fabio, Edgar's contribution could have been design review milestones in developing a customized vendor product. In fact, Fabio based much of his design on a hand-operated sampling machine that he clearly invented without Edgar. These arguments are all consistent with patent guidance supporting Fabio as the inventor.
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Support for Edgar's Position
It appears clear that Edgar saw the application of this new technology as his idea, his intellectual property. After all, he recognized the need to improve current sampling methods and took all the necessary steps to implement his idea. He sketched out a concept that became the basis for the design or at least inspired it. Edgar approached Doris to secure half the development funds and hired Fabio to fabricate - not invent - the design concept. Edgar provided more than the initial design concept; he suggested to Fabio other technologies to be integrated into a system design. Fabio accepted these additional ideas as part of the collaborative effort that included joint review and development of the drawings and specifications. Simply put, without Edgar this design would not have existed in its current form. And Edgar is not claiming to be the sole inventor, he just wants to be named on the patent.
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Legal and Ethical Considerations
From a legal point of view, Fabio may have more evidence that he designed the system. He holds all detailed specifications and drawings. Edgar never used his professional engineering license to stamp or approve the design. (In fact, Edgar may have been outside his practice area if he had because the device is a mechanical system, not a civil engineering design.) The case can be made that Edgar's contributions to the project were financial rather than design. Edgar can certainly contest these arguments, but he has less evidence in hand. By putting his design ideas into loose files instead of his project notebook, he may have weakened his position. However, Edgar does hold some legal ground. That loose file can be offered as evidence despite the legal preference for bound research notes. He can show the contract with Fabio as defining the design concepts and argue that he is a co-inventor. Edgar can claim that the design reviews with Fabio were not simply contractual milestones between vendor and client, but important collaborative discussions on the system design. He has Doris (at least), whose early approval he sought to pursue this idea further, although in her press releases she identified the design as Fabio's. These legal claims have never been made in this case.
Ethically, the characters in this case did not identify any problem until the patent issue arose. Edgar seemed more interested in the intellectual insights that improved sampling would provide, and he was proud to publish articles discussing the sampling protocol he pioneered (which used the technology built by Fabio). He was not particularly interested in the legal benefits of a patent, namely the right to license the design to competing vendors or exclude them from using the design. As a leading vendor in the field, Fabio has a clear interest in improving his product line and competitive position in the market. He benefited from the articles published by Edgar, even without being an author, because Fabio could cite current research claims as testimonials that his design was high quality and cost effective. If Fabio had not applied for a patent, would this case raise any ethical issues at all?
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The initial questions for discussion try to clarify some of these issues. Many researchers do not consider vendors or technicians to be colleagues involved in innovations; they are rarely included as authors. Discussing Edgar's role in meeting with Fabio to review the drawings and specifications may identify underlying bias in the participants. (This case was specifically designed so that Fabio was an outside vendor, perhaps not covered by the intellectual property policies of Edgar's research institution.)
Whether or not Edgar should have included Fabio as an author may be discussed within the context of the Academies' standards and/or by using some journals' actual authorship guidelines. The primary issue is whether each named author made a significant intellectual contribution to the paper. Depending on the focus of Edgar's papers, Fabio could have made a significant contribution to the design of the sampling protocol by building the sampling machine. Alternatively, Edgar could have focused on field development and testing in such a way that Fabio's contribution was less significant. Consensus on this point may be more difficult than it appears.
Some guidelines for authorship may include:
The question of including Edgar on the patent may be ethically clearer, if not legally so. Fabio may have a business concern about including Edgar on the patent, because as a patent holder Edgar could participate in licensing the technology to Fabio's competitors. General Information Concerning Patents states, "Any joint owner of a patent, no matter how small the part interest, may make, use, and sell the invention for his or her own profit, without regard to the other owner." (U. S. Department of Commerce, 1992, p. 27) This right includes selling one's interest or granting licenses to others without consulting the other joint owner, unless the joint owners of the patent agree to other conditions independent of the patent. Edgar's desire for recognition as an inventor could be legitimate ethically. With some better negotiation, Edgar and Fabio may have found conditions that met both of their objectives. For example, Fabio could retain all licensing rights and a majority ownership of the patent. Edgar could be named on the patent, but his share of royalties or licensing fees could be limited. This kind of agreement is common within corporations.
Mac may also have some claim to the patent if his contribution in field development resulted in significant design elements in the patent; his contribution is unclear, however. It appears that Doris has no claim as an inventor since she provided only financial support. By publicizing the technology in company literature, she may have added to the motivations for Fabio to seek patent protection. Doris's role, as presented in the commentary and to some extent in the case, does not clearly indicate sufficient contribution to warrant co-authorship. Perhaps she was invited to be a co-author by Edgar as a courtesy for her support. This question could be briefly discussed as another ethical issue related to this study.
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The additional information included in the case attempts to further clarify the legal and ethical analysis. By weakening Edgar's legal case somewhat, the discussion necessarily focuses on the ethical dimensions. Some participants may follow the weakening legal position and conclude that Fabio is the sole designer of the technology; others who are more secure in the academic concept of intellectual property may continue to defend Edgar's position. One can introduce additional scenarios where Edgar might have included some intellectual property agreement into his initial contract with Fabio. If this happens, it may be valuable to adopt Fabio's perspective again and challenge the fairness of this agreement regarding patent ownership.
The question about Fabio's education relative to Edgar's is designed to expose for discussion any underlying preference in academic research for the intellectual authority. This concern is also relevant in corporate research. There are many cases where ideas that were developed by the technicians or junior engineers/researchers were adopted by their supervisors without credit. Despite the potential for these abuses, this may be more of a confounding question than necessary, and could be quickly put aside in discussion if no debate occurs.
When we change the contractual relationship between Edgar and Fabio from client/vendor to fellow employees - and, moreover, to supervisor and subordinate - the assessment may change. First, it becomes constrained by any applicable prior agreements within the institution. (This point could provide a good opportunity to review the research facility's policies on ownership of ideas.) Second, the responsibility for work products such as a new design may be less clearly defined. Edgar is the principal investigator and may be considered in responsible charge of all the products of this research. His authority may improve his claim to the design and patent, although it should not displace Fabio from the patent.
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Ethical Milestones and Judgment
We can identify many places where Edgar could have acted to clarify his claim to the intellectual property and as co-inventor. Some suggested opportunities include:
In assessing the ultimate fairness of the outcome, two perspectives may be useful. One takes the initial motivations of each of the characters into account. From this perspective, it can be argued that all achieved their initial objectives. Sampling at Doris's site benefited from improved sampling protocols and from positive public relations. Mac received good field experience and co-authorship in journal publications. Edgar achieved all of the objectives he had for the research, published well-respected articles and received promotion. Edgar's intellectual property claims to the research results were never contested. Fabio expanded his product line to include a new system for sampling, improving his reputation as a vendor, and protected his product design from competition by patenting the technology.
The other perspective is whether the design idea was collaborative. If so, then it may be most ethical for Fabio to include Edgar on the patent. However, Fabio has an interest in negotiating with Edgar limited authority to sell or license the technology to Fabio's competitors. Edgar might have some ethical obligation to share authorship with Fabio as well. This perspective would require more negotiation between the two characters to achieve a satisfactory result. The meanings we attach to the terms concurrent engineering, team development, etc., have important implications for both intellectual property and patent protection.
Certainly, the opportunities to resolve the concerns raised here were most available early on. With the increased complexity of technology and interdisciplinary teams in research, this point becomes the central lesson to draw from the case.
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